The ABC’s of Section 6(5)(a)-(e): Back to basics on trademark confusion
In its recent decision in Home Hardware Stores Limited v Benjamin Moore & Co Limited, 2015 FC 1344, the Federal Court has taken us back to the basics of assessing the likelihood of confusion between trademarks and how to apply the relevant factors to consider, as set out under section 6(5) of the Trademarks Act. Too often, arguments and decisions on this issue are themselves plagued by confusion as to what is and what isn't confusing and why or why not. The reasons for judgment in this particular case resolve some of that confusion.
Home Hardware opposed two of Benjamin Moore's trademark applications: BENJAMIN MOORE NATURA and BENJAMIN MOORE NATURA & DESIGN for interior and exterior paints. Home Hardware argued that these marks were confusingly similar to two trademarks that Home Hardware had applied to register, namely, NATURA and BEAUTI-TONE NATURA. The Trademarks Opposition Board rejected Home Hardware's opposition, finding that the marks were more different than alike. No confusion was found at any of the material dates and Benjamin Moore's marks were allowed.
Home Hardware sought judicial review of the Board's decision in the Federal Court. After carefully considering whether the Board was correct in its analysis and application of the relevant factors under section 6(5), the Court overturned the Board's decision and held that the ordinary consumer would indeed be confused as to whether the trademarks in issue originated from the same commercial source.
Justice Camp's reasons identify three instances where the section 6(5) factors were conflated or misinterpreted by the Board and the parties. His decision sets the record straight on the correct application of the enumerated factors under section 6(5). These are important basic concepts for every trademark owner and practitioner and well worth summarizing.
6(5)(a) –Inherent distinctiveness and extent to which a mark has become known & 6(5)(b) – Length of time that the mark has been in use
The Federal Court's 6(5) basics lesson begins by addressing how sections 6(5)(a) and 6(5)(b) are often mixed up. The Court explains that the assessment of the extent to which a mark has become known under section 6(5)(a) should not be crossed or intermingled with the issue under section 6(5)(b) which is the length of time that the mark has been in use.
In this case, the Court noted that the Board conflated these two distinct factors when the Board concluded in respect of section 6(5)(a) that the extent of Home Hardware's prior use of its trademark was indeterminate. Here the Court indicated that the extent of the mark's use is not dependent on how long the mark has been in use and that the length of time in use assessment (resulting in a finding that that time was indeterminate) should have been reserved for the section 6(5)(b) analysis.
6(5)(c) – Nature of goods & services & 6(5)(e) – Degree of resemblance between marks
The decision identified a second instance of conflated analysis with respect to section 6(5)(c), the nature of the wares and services, and 6(5)(e), the degree of resemblance between marks. Section 6(5)(c) requires that an assessment be made as to the description of goods or services as they appear on the trademark application form. By contrast, under section 6(5)(e) it must be determined whether the marks in contention sound, and/or look alike, or conjure up similar ideas.
In arguing that the nature of the wares were distinct, Benjamin Moore submitted that many of the goods sold in association with Home Hardware's NATURA mark were unrelated to paint and, since only BEAUTI-TONE NATURA related to paint itself, the differences between the applied for marks and BEAUTI-TONE NATURA ruled out a likelihood of confusion. The Court commented that, for section 6(5)(c), it is sufficient that both the Applicant and the Respondent sell at least some of the same wares bearing the trademark at issue – which, the Court found, they did. An assessment of the degree of resemblance between the marks (regardless of what wares or services they are associated with) should be reserved for the section 6(5)(e) analysis and should not be intermingled with a discussion of the nature of the goods and services offered and whether they are confusingly similar.
Section 6(5)(e) and ensuring an understanding of Masterpiece
The third and final clarification offered by the Court concerned one of the doctrinal lessons in Masterpiece Inc v Alavida Lifestyles Inc.,2011 SCC 27, the Supreme Court's seminal decision on assessing confusion.
In its argument on the degree of resemblance between the marks (section 6(5)(e)), Home Hardware explained that on Benjamin Moore's current label the NATURA aspect is the prominent feature and main focus, while the BENJAMIN MOORE aspect is off-set to the top right corner. Home Hardware submitted that this current label causes confusion.
Benjamin Moore took serious issue with these submissions and argued that to compare its marks with Home Hardware's applied-for marks as they are currently being used contravenes the lesson in Masterpiece that a trademark application should be assessed according to its contents rather than the actual use of the subject trademark.
Recognizing a mis-characterization of the principle in Masterpiece, the Court offered some clarity and a concise refresher about the relevance of the actual use of a trademark when applying section 6(5)(e) in the context of opposing an application or seeking to invalidate a registration. Pointing back at Masterpiece, the court emphasized that while the actual use of the mark can be considered, it should not be considered to the exclusion of all other potential uses of the trademark that would be covered by the application or registration. So long as some of those uses would be confusing, then this factor should favour a finding of confusion.
When the court assessed actual use of the mark in this case, it was evidenced that both parties featured the NATURA aspect of their respective marks as the central product name, resulting in confusingly similar resemblance.
This decision will serve as a useful "back to basics" reference on how to properly apply the factors under section 6(5) when assessing the likelihood of confusion between trademarks, particularly where it's unclear which circumstances are relevant to which factor, as is often the case.